Vol. 24, No. 3, Spring 2016

There is nothing comparable in ourprofessional life to a good jury trial. And nothing inspiresmore civic pride and respect than witnessing 6 to 12 fel-low citizens put aside their busy lives and embrace thesolemn task of serving as impartial judges of the facts.That is truth in action, to paraphrase Louis Brandeis, and it

is the bedrock of our republic’s actual-ization of equal justice under law.

But the rate of civil jury trials in fed-eral court has plummeted to less than1% and the jury trial is, shockingly,threatened with extinction. While sev-eral factors have contributed to thisun fortunate state, a leading one is thatjury trials are seen as a too long andtoo expensive way to resolve a dis-pute. A drawn-out trial might doublethe legal fees and costs incurred dur-ing all the pretrial discovery and mo -tion work, and it heavily taxes witness-es by diverting an excessive amount of

their time from personal or business affairs to focus oncourt appearances and testimony. It also exacts too high

Motions for preliminary injunc-tive relief are routinely sought in cases involving claims fortrademark infringement. For many years, once a movingparty established a likelihood of success on the merits,irreparable harm was presumed and an injunction wouldusually be issued. This all changed with the Ninth Circuit’sholding in Herb Reed Enter., LLC v.Florida Entm’t Mgmt., Inc., 736 F.3d1239 (9th Cir. 2013), that a plaintiff mustaffirmatively establish a likelihood ofirreparable harm in order to obtain apreliminary injunction on a trademarkinfringement claim.

The Herb Reed decision is rooted ineBay Inc. v. MercExchange, L.L.C.,547 U.S. 388 (2006), which overturnedmany years of jurisprudence in conclud-ing that a party seeking a permanentinjunction for patent infringement wasnot entitled to a “categorical” presump-tion of irreparable harm after succeed-ing on the merits. After eBay, the circuit courts slowlyextended the so-called eBay rule to copyright cases. See,e.g., Perfect 10, Inc. v. Google, Inc., 653 F.3d 976, 979-81(9th Cir. 2011).

Whether the eBay rule applied to trademark casesremained unsettled. Some argued that a trademark isinherently different from a patent or copyright and thatthe harm resulting from patent/copyright infringement isdifferent from the harm caused by trademark infringe-ment. Predictably, the district courts reached differentconclusions. While the district courts in the Ninth Circuitwere generally trending in the direction of requiring con-crete evidence of irreparable harm before issuing aninjunction, some courts still applied the presumption of

Also in This Issue

Leeron Morad New Sheriff in Town: What to Expect from the Defend Trade Secrets Act....................................p. 3

James Yoon On PATENTS ......................................p. 7

Howard Ullman On ANTITRUST ..................................p. 9

Caroline McIntyre Using Experts Effectively in Litigation ........................................p. 11

Diane M. Doolittle Letter from the President ............p. 12

Injunction Relief in Lanham ActCases Post-Herb Reed

Griff Towle

Volume 24 No. 3Spring 2016

Continued on page 6

Continued on page 2

Simple Steps to ImproveYour Jury Trials

Hon. James Donato

61861-ABTL-No-VOL24 #3 PRINT_-ABTL-No-VOL16 #2 6/9/16 1:16 PM

a toll from the most important participants, the jury. This is a solvable problem. With just a handful of basic

practices, a jury trial can be efficient, effective and

affordable.

Trial Time Limits

The simplest and most direct way to contain costs andmake a trial more manageable is to set time limits foreach side’s case. Some judges, including me, do this rou-tinely in their civil cases and so you may think this is oldnews. It is not. Every week I hold case management con-ferences where the parties propose long trial times forstraightforward cases — 70+ hours, to take one recentexample. This is a failure of will and planning. Many,probably most, civil cases, can be fairly tried in 10-20hours per side for the presentation of the evidence, withup to an additional 90 minutes per side for openings andclosings. That means the case will be in the hands of thejury in about six trial days on a humane 9:00 a.m. to 3:00p.m. schedule with breaks, or in about four days if thetrial goes for full days.

These limits work well in most civil cases and do notresult in any party being railroaded or denied dueprocess. A sliver of cases, such as an MDL proceeding ora multi-party antitrust or RICO case, will need more time.But those cases are rare and should not affect the trialtime estimate in other matters. I know from personalexperience as a trial lawyer and trial judge that the major-ity of civil cases can be tried fairly within the 10-20 hourtime band. And that includes patent cases. It’s time toput an end to the patent exceptionalism viewpoint thatsays patent cases are too complicated to be tried withinefficient time limits. They are not, and I know thatbecause the patent cases I’ve tried have gone to the jurywith time left on the clock, and because courts in otherdistricts routinely impose even tighter limits with no illeffects on justice.

The Northern District does not have a formal “rocketdocket” but we do have General Order 64 for your use.General Order 64 sets out detailed procedures for anexpedited jury trial. With the parties’ agreement and thejudge’s approval, the order provides for focused pretrialdiscovery and motion practice, and anticipates that a jurytrial will be held within six months of the agreement.Trial is before six jurors with three hours for presentationof evidence and additional time for statements. If thisprocedure is used, the case will go to the jury after abouta day and a half of trial.

Give this option a try. My sense is that the trial lawyerbar is not as aware of this option as it should be. GeneralOrder 64 best fits a discrete type of case and is not apractice of general application. But you will likely handlea suitable case during your career and you should keepthe expedited trial option in mind.

Trial limits definitively answer complaints about theexcessive time and expense of jury trials. When there is ahard stop after a very manageable 6 to 12 days in court, Continued next page

Continued from page 1Simple Steps to Improve Your Jury Trials

2

legal fees and costs simply cannot get out of control. Theamount of time witnesses will be asked to commit to thetrial will be readily determinable and is guaranteed not toexceed a reasonable number of hours. And your case willalmost certainly benefit from the incentive to focus onwhat truly matters and omit the needless detail andcumulative testimony that invariably creep in when timeis no object.

Jury Comprehension

Everything we can do to improve jury comprehensionwill also increase trial efficiency and effectiveness. Youhave a panoply of tools to help the jury understand yourevidence and argument. The first is intelligent use of theperemptory challenge. In federal civil cases, you get threeopportunities to dismiss a prospective juror with general-ly no questions asked — the main exception being aBatson challenge, which also applies in civil cases to pre-vent racial bias or discrimination in jury selection. I raiseperemptory challenges as part of jury comprehensionbecause I frequently see lawyers strike prospective jurorswho look well-suited for a case by background, training oreducation for just that reason, as if counsel fear that some-one might actually understand the evidence. This is par-ticularly common in patent and technology cases, wherelawyers seem to routinely strike candidates with exactlythe kind of technical knowledge or expertise that wouldlet them really grapple with the subject matter. I do notbelieve that a jury should ever be limited to specialists,and one of our great strengths as a republic of laws is thatwe call on all citizens, without regard to privilege or sta-tus, to sit on our juries. But if a randomly called veniregives you the prospect of a particularly knowledgeablejuror, avoid a knee-jerk challenge. If you do use yourperemptory challenges to kick off the people who best fitthe case, it is bad form to complain at conferences and inbar articles that juries are not equipped to decide com-plex cases.

Once the jury is seated, you should give them the toolsto understand your case. A simple and effective tool is anotebook. The Ninth Circuit, the ABA and most judges Iknow encourage notetaking by jurors. I view it as essen-tial to the jury’s task. Make it easy for that to happen. Inmy civil cases, I direct the parties to provide each jurorwith a three-ring 1” binder that has: (1) 50 pages of linedpaper for notes; (2) a glossary of key terms or abbrevia-tions that the parties agree on; (3) any stipulations of factthe parties reach; and (4) space to insert a full-page hard-copy photo of each witness captioned with the witness’sname and three-hole punched for insertion into thebinder. The photos are head shots that show the witnessexactly as she or he appears on the stand, and I haveheard from jurors that they really appreciate those visualreminders during deliberations. At the end of the case, Igive each juror a hardcopy of the final jury instructions toput into the binder.

Another good way of improving comprehension is tolet jurors ask questions. While some older cases have saidjury questions are “fraught with peril,” DeBenedetto v.


The newly enacted Defend TradeSecrets Act (“DTSA”), 18 U.S.C. § 1831, et seq., permitsplaintiffs alleging trade secret misappropriation to bringtheir claims in federal court without diversity. The DTSAraises important new substantive and procedural ques-tions. This article discusses four of them.

Where Will DTSA Cases Be Heard?

The DTSA grants original, but not exclusive, federal juris-diction for claims arising under it, thusgiving plaintiffs the ability to shop forthe forum that best serves their needs.Plaintiffs faced with the “state or feder-al” decision likely will assess whetherthe judges sitting in the respective foraare perceived as being protective oftrade secrets or otherwise favorable toplaintiffs. A state court’s shorter noticeperiod for obtaining a temporaryrestraining order may militate in favorof state court. Plaintiffs may also favorsome state courts that may be per-ceived as permitting wider-ranging dis-covery, especially in light of the recent-ly-amended Federal Rules of CivilProcedure.

Defendants may prefer to remove cases to federal court,to deny the plaintiff its (presumptively) preferred forum.If a plaintiff brings claims under the DTSA in state court,the defendant may remove the case pursuant to 28 U.S.C.§ 1331 and the well-pleaded complaint rule because thereis a clear federal question (the DTSA claim) on the face ofthe complaint.

Knowing that, plaintiffs who wish to litigate in statecourt may try to prevent removal by forgoing claims underthe DTSA. In this scenario, a defendant who cannotremove based on diversity jurisdiction will need to be a bitmore creative in order to get to a federal forum, perhapsusing one of two options:

First, because the DTSA’s definitions of “trade secret” and“misappropriation” are based on the Uniform Trade SecretsAct (UTSA), which is also the basis for trade secret protec-tion in 48 states, if there is a legitimate dispute about mis-appropriation of a trade secret under state law, the defen-dant may file a declaratory judgment action in federalcourt arguing that there is a controversy over whether itviolated the DTSA. Filing a declaratory judgment may nothalt the earlier-filed state court action but, if the federalcase is not stayed, it may get done first, and its result mayestop the plaintiff on key issues in the state case.

Continued on page 4Continued on page 10


3

Leeron Morad

New Sheriff in Town? What to Expect from the Defend Trade Secrets Act Goodyear Tire & Rubber Co., 754 F.2d 512, 517 (4th Cir.

1985), I have found them — as lawyer and judge — to beinstrumentalities of goodness. Jurors often ask salientquestions, or at the very least, questions that help themclear up potential confusion or misunderstanding. Youshould encourage them. My practice is to allow jurors tosubmit proposed questions in writing to me after the wit-ness is done testifying but before stepping down. I’llreview the questions in a sidebar with counsel and thenask or decline them. Counsel can do a very brief follow-up with the witness if warranted. This practice hasworked well and I am convinced it has led to better juryunderstanding and engagement.

Consider also the timing of jury instructions. During anorientation for new federal judges, I heard jury servicelikened to being dropped in a classroom, given a multi-day lecture on unfamiliar topics, and then handed anexam with 30-50 pages of instructions on how to com-plete it. This can be handled better. Many judges will givepreliminary instructions about the burden of proof, thephases of the trial, what is evidence, and so on beforeopening statements. I like to add to that a short statementof the case that I direct the parties to prepare. It is veryhelpful for the jury to hear even a paragraph on what thecase is about at a high level. At the close of evidence, giv-ing the final instructions before closing arguments is use-ful. That way, the jury has heard from the court first aboutthe rules of law before counsel start arguing about them.I also give each juror a written copy of the final instruc-tions because reading while listening has been shown tosubstantially increase comprehension.

Another good area for improving understanding is thetext of jury instructions. The Ninth Circuit has model civilinstructions that are virtually guaranteed not to be asource of reversal when used. Judges and counsel likethem for that reason. But that does not mean you need toslavishly follow them word for word. While I am certainlynot criticizing the drafters, who brilliantly handled themonumental task of preparing the model instructions, thelanguage can often be streamlined and made more com-prehensible. Many of the preliminary instructions wouldbenefit from that. The substantive instructions in the finalset can also be improved with careful editing. Makingjury instructions clearer and easier to follow should be apriority for you.

Icould go on for pages about other techniques toimprove jury comprehension. Visual presentation of

evidence alone warrants extended treatment. We are dis-posed by evolution to get something like 80% of ourinformation visually and yet most of the trial graphics Isee fail to take advantage of that fact. This is particularlysurprising because I know how much trial graphics cancost. But we will leave that topic to another day. Youhave powerful tools to control the time and expense ofjury trials, and you should use them to try more cases.


4

Continued from page 3New Sheriff in Town?

Moreover, the federal action may effectively coerce theplaintiff to refile its affirmative case in federal court andassert its DTSA and state law claims in one forum.

Alternatively, if the defendant can assert a patent orcopyright counterclaim, the state court action will beremovable to federal court. Many practitioners may besurprised by this, since counterclaims do not usually cre-ate federal jurisdiction. See Holmes Grp., Inc. v. VornadoAir Circulation Sys., Inc., 535 U.S. 826, 831 (2002). In thiscase, however, it is possible to remove the action thanks to28 U.S.C. § 1454 — a relatively new provision created bythe America Invents Act that vests federal courts with juris-diction to hear cases involving patent or copyright claimsraised in a counterclaim. See Vermont v. MPHJ Tech.Investments, LLC, 803 F.3d 635, 644 (Fed. Cir. 2015). Thus,if the defendant can assert a patent infringement counter-claim, the entire case may be heard in federal court. (If thedefendant does not own any patents, it may even wish topurchase one to assert.)

How Specific Will Plaintiffs Need

To Be in Describing Their Trade Secrets?

Section 2019.210 of the California Code of CivilProcedure protects defendants in California’s state courtsfrom having to respond to discovery until the plaintiff dis-closes its trade secrets “with reasonable particularity.” TheFederal Rules of Civil Procedure do not have a comparableprovision.

Until recently, some federal courts applied section2019.210 to trade secret claims based on California law.Their rationale was, at least in part, that “application of sec-tion 2019.210 to trade secret claims filed in the federalcourt avoids improper incentives for choosing a federalforum.” Soc. Apps, LLC v. Zynga, Inc., 2012 WL 2203063, at*2 (N.D. Cal. Jun. 14, 2012). With the creation of a federalcause of action, however, the forum shopping rationale isno longer as strong, and federal courts may not apply sec-tion 2019.210 to DTSA claims. Defendants who want toforce plaintiffs to provide this disclosure will need to findnew ways of doing so.

One option may be a motion to dismiss, under Twomblyand Iqbal, arguing that to plausibly allege trade secret mis-appropriation the plaintiff must provide some detailsabout the alleged trade secrets. In granting such a motion,one court recently noted:

To adequately plead a trade secret, it must be describedwith sufficient particularity to separate it from matters ofgeneral knowledge in the trade or of special knowledge ofthose persons who are skilled in the trade, and to permitthe defendant to ascertain at least the boundaries withinwhich the secret lies.

Bladeroom Grp. Ltd. v. Facebook, Inc., 2015 WL 8028294,at *3 (N.D. Cal. Dec. 7, 2015) (quotations omitted).Defendants can employ this rationale to attack DTSAclaims that do not provide a sufficiently detailed tradesecret disclosure.

Another approach may be to use the recent amend-ments to the Federal Rules of Civil Procedure that empha-

size the importance of proportionality in discovery. Adefendant could argue that the parties and the court needa sufficiently detailed trade secret disclosure to assesswhether the discovery sought (particularly the defendant’sown confidential information) is proportional to the tradesecret claims being asserted. A defendant’s successfulargument could have the same result as section 2019.210,staying discovery until the plaintiff provides a detailedtrade secret disclosure.

Finally, defendants may be able to use the limited scopeof the DTSA as a means for obtaining a detailed disclosureof the plaintiff’s trade secrets. Congress enacted the DTSAunder its Commerce Clause power, creating a private rightof action only for trade secrets that are “related to a prod-uct or service used in, or intended for use in, interstate orforeign commerce.” 18 U.S.C. § 1836(b)(1). Defendantscould argue that without a specific identification of thetrade secret, a federal court cannot know whether thealleged trade secret was used in or intended for use ininterstate commerce, and thus whether it has jurisdiction.Bringing such a motion under Rules 12(b)(1) or 12(b)(6)could persuade a court to limit a defendant’s discoveryobligations until the plaintiff shows that the alleged tradesecret is linked to interstate commerce — a showing thatmay require the plaintiff to provide details about thealleged trade secrets.

Cases in which a plaintiff has obtained a seizure orderunder the DTSA may also require an expedited tradesecret disclosure. The DTSA’s seizure provision contem-plates expedited discovery, providing that “[t]he court maymake such orders modifying the time limits for discoveryunder the Federal Rules of Civil Procedure as may be nec-essary to prevent the frustration of the purposes of a hear-ing under this subparagraph.” 18 U.S.C. § 1836(b)(2)(F)(iv). Since a plaintiff who obtains a seizure order has“the burden to prove the facts supporting the findings offact and conclusions of law necessary to support theorder,” id. § 1836(b)(2)(F)(ii), including that “the informa-tion is a trade secret,” id. § 1836(b)(2)(A)(ii)(IV)(aa), a courtcould order the plaintiff to respond to discovery requestsregarding the specificity of the trade secrets on a much-expedited basis.

Are Tort Claims Preempted by the DTSA?

The California Uniform Trade Secrets Act preempts cer-tain tort claims that arise from the same nucleus of opera-tive facts as a trade secret claim, including claims for unjustenrichment and unfair competition. See, e.g., DigitalEnvoy, Inc. v. Google, Inc., 370 F. Supp. 2d 1025, 1033-35(N.D. Cal. 2005). It is uncertain whether the DTSA alsopreempts state tort claims.

The DTSA states only that it “shall not be construed topreempt or displace any other remedies, whether civil orcriminal…for the misappropriation of a trade secret.” 18U.S.C. § 1838. Nor does the DTSA’s legislative history sug-gest that the Act is intended to preempt any state law tortclaims. To the contrary, both the Senate and HouseReports on the DTSA broadly state that it is not intendedto preempt state laws, without specifying any particular

Continued next page


Continued from page 4New Sheriff in Town?

5

state laws. See, e.g., H.R. Rep. No. 114-529, at 6, 13, 14(2016); S. Rep. No. 114-220, at 3, 9, 10, 14 (2016). As aresult, courts may find that the DTSA does not preemptstate tort claims, even if a state trade secret claim wouldpreempt such claims.

Plaintiffs may therefore prefer to bring their trade secretclaims under the DTSA rather than California state tradesecret law, and simultaneously seek relief for torts thatthey could not otherwise assert. If courts permit plaintiffsto do so, the DTSA may significantly expand the theoriesof liability that defendants could face in trade secret litigation.

Implications of the DTSA’s Seizure Provision

The DTSA’s new, ex parte seizure provision is relativelyunprecedented in American trade secret law, but bearssome similarity to orders available under English law.

Section 2 of the DTSA permits courts to grant ex parteorders “providing for the seizure of property necessary toprevent the propagation or dissemination of the tradesecret that is the subject of the action.” 18 U.S.C. §1836(b)(2)(A)(i). An application for a seizure order mustsatisfy several requirements, including demonstrating thatthe adverse party would destroy or make inaccessible theevidence to be seized if given notice of the order. Lawenforcement personnel carry out these orders while theapplicant and its representatives may not participate. Id. §1836(b)(2)(E).

Some authors have compared section 2 of the DTSA tothe seizure provisions in the Copyright and Lanham Actsthrough which a court may order the seizure of pirated orcounterfeit goods and the means of making them. 15U.S.C. § 1116; 17 U.S.C. § 503. These authors argue thatbecause the copyright and trademark provisions have notbeen abused, there is little risk that the DTSA’s seizure pro-vision will be abused. This comparison, however, ignores acrucial distinction between copyright or trademarkinfringement and trade secret misappropriation: it is rela-tively easy to spot a counterfeit good, especially if it is soldby the proverbial “guy on the corner.” Determiningwhether a trade secret has been misappropriated, howev-er, is a fact-intensive inquiry that depends on, among otherthings, an alleged misappropriator’s illegitimate access tothe trade secrets in question and secrecy of the informa-tion. Moreover, both the Copyright and Lanham Acts’ pro-visions only permit seizure of the counterfeit goods,means of making them, and records of sales. The DTSA’sprovision is significantly broader.

The DTSA’s seizure provision is more appropriatelyanalogized to English law’s Anton Piller orders, which havebeen granted — and criticized — since 1975. Abuse ofAnton Piller orders appears to have been so severe that inthe mid-1990s, the British Parliament reformed the lawgoverning such orders.

The first Anton Piller order was issued in a trade secretmisappropriation case that sounds like it came right out ofa Hollywood script: A German manufacturer suspected —based on the word of two whistleblowers — that its

English agent had been in secret communication withGerman competitors and was going to supply them withsecret designs for power units. Anton Piller LG v. Mfg.Processes Ltd., [1975] A.C. 8 (Eng.). The manufacturer was“fearful that if the English company were given notice [ofthe requested injunction] it would take steps to destroythe documents or send them to Germany,” so the manufac-turer applied for an ex parte order permitting it and itslawyers to enter the English company’s premises to searchfor and seize the relevant papers, without any prior noticeto the English company. Initially, the trial court denied theapplication, noting its fear that such an order “mightbecome an instrument of oppression, particularly in a casewhere a plaintiff of big standing and deep pocket is rangedagainst a small man who is alleged on the evidence of oneside only to have infringed the plaintiff’s rights.” See id.The court of appeals reversed and granted the order, set-ting precedent for so-called Anton Piller orders to beissued under English law.

Like the DTSA seizure provisions, Anton Piller orderswere permitted only (i) in the interests of justice wherethe potential for damage to the applicant was serious, (ii)when there was a “grave danger that vital evidence will bedestroyed,” (iii) with clear evidence that the defendants arein possession of the documents, and (iv) with a suretybond. Id. Despite the procedural requirements, somereports indicate that English courts issued about 500 suchorders per year in a variety of areas of substantive law, andcommentators appear to agree that Anton Piller orderswere commonly abused. As noted, Parliament eventuallyreformed the law governing these orders with the CivilProcedure Act in 1997, adding safeguards that include pro-tecting privileged information and requiring more facts tobe included in an application for an order.

The DTSA’s seizure provision presents greater risks thanAnton Piller orders. First, Anton Piller seizures are carriedout by the plaintiff and her counsel, not by law enforce-ment personnel. Law enforcement searches risk beingbroader and more disruptive than necessary because theagents will not be familiar with the details of the civil case.Second, a party can refuse to cooperate with Anton Pillerorders. While that risks contempt of court, a defendantthat truly believes there is no basis for the order mayobject and fight in court. A DTSA seizure order may per-mit law enforcement to use force to enter locked areas,leaving a defendant no option but to permit the search.Third, the DTSA includes no protection against the seizureof items containing privileged or incriminating informa-tion, whereas Parliament provided these protections withits reform of Anton Piller orders. Finally, and perhaps mostimportantly, unlike in the 1970s when Anton Piller orderswere introduced, trade secrets are now stored electronical-ly, literally intertwined with essential day-to-day businessinformation. DTSA seizures may confiscate key electronicdevices, potentially disrupting businesses far more severelythan when Anton Piller orders were first introduced.

With these risks and in light of the abuse of AntonPiller orders, courts may well be very careful in

deciding DTSA seizure applications.

oLeeron Morad is an attorney with Durie Tangri LLP.


irreparable harm. The Ninth Circuit remedied the result-ing confusion in Herb Reed.

The case involved “The Platters” vocal group and wasthe latest chapter in a longrunning dispute over who hadthe right to use The Platters name. The district courtentered a preliminary injunction and defendant appealed.The Ninth Circuit reversed, concluding that a plaintiffseeking a preliminary injunction in a trademark infringe-ment case must actually demonstrate irreparable harm. Inreaching its decision, the Ninth Circuit relied on eBay andWinter v. Natural Res. Def. Council, Inc., 555 U.S. 7 (2008),which reconfirmed the traditional four-factor test forinjunctive relief, in finding that “[n]othing in the LanhamAct indicates that Congress intended a departure in trade-mark infringement cases” and “[g]one are the days when‘once the plaintiff in an infringement action has estab-lished a likelihood of confusion, it is ordinarily presumedthat the plaintiff will suffer irreparable harm if injunctiverelief does not issue.’” Herb Reed, 736 F.3d at 1249-50(citation omitted).

The Ninth Circuit was the first circuit to expresslyextend the eBay rule to a trademark infringement caseand, to date, the Third Circuit is the only other circuit tohave issued a similarly definitive opinion. See FerringPharmaceuti cals, Inc. v. Watson Pharmaceuticals, Inc.,765 F.3d 205, 216-17 (3d Cir. 2014). With the exception ofthe Fifth Circuit, which has essentially affirmed the pre-sumption, the other circuits either have not specificallyaddressed the issue or have expressed an inclination toapply the eBay rule to trademark cases, but declined to doso.

Since Herb Reed, the focus in motions for injunctiverelief in the Ninth Circuit has largely shifted from the mer-its of the underlying claim to the irreparable harm factor.And while Herb Reed confirmed that irreparable harmnow must be established in a Lanham Act case, it providedlittle guidance as to what actually constitutes irreparableharm and how to actually prove it.

What Constitutes Irreparable Harm

(and How to Prove It)

In its broadest sense, irreparable harm is “harm forwhich there is no adequate legal remedy.” Arizona DreamAct. Coal. v. Brewer, 757 F.3d 1053, 1068 (9th Cir. 2014).Something more than “economic injury” is required,because “such injury can be remedied by a damageaward.” Rent–A–Ctr., Inc. v. Canyon Television &Appliance Rental, Inc., 944 F.2d 597, 603 (9th Cir. 1991).Beyond this it is unclear. In the aftermath of Herb Reed, itseemingly varies from district court to district court.Arguments and evidence that worked in the past oftenwill not pass muster. In many respects, there is an elementof “I know it when I see it” in the courts’ analyses.

For these reasons, how to actually prove irreparableharm in a Lanham Act case has confounded practitionersand the courts since Herb Reed. Still, the basic ground

6

Continued from page 1Injunctive Relief in Lanham Act

rules are familiar in concept, if not application. “Cursoryand conclusory” assertions of irreparable harm and empty“platitudes” are insufficient even in circumstances wherethe infringement is egregious. Herb Reed, 736 F.3d at1250. There must be more than a mere “possibility” ofirreparable harm; it must be “likely” to occur in the future.Titanes Light Shop, LLC v. Sunlight Supply, Inc.,585 F.App’x 390, 391 (9th Cir. 2014), quoting Winter, 555U.S at 20, 22. Put another way, the threatened harm mustbe real and not theoretical. Cutting Edge Solutions, LLC v.Sustainable Low Maint. Grass, LLC, 2014 WL 5361548, at*6 (N.D. Cal. Oct. 20, 2014). And an unwarranted delay inseeking relief suggests a lack of urgency and undermines aclaim of irreparable harm. Champion Cain v. MacDonald,2015 WL 4393303, at *10 (S.D. Cal. Jul. 15, 2015).

Loss of Control Over Reputation,

Goodwill and Products/Services

In Herb Reed, the Ninth Circuit held that “[e]vidence ofloss of control over business reputation and damage togoodwill could constitute irreparable harm.” 736 F.3d at1250 (emphasis added). The district courts generally havefollowed the Ninth Circuit’s lead. See, e.g., BrooklynBrewery Corp. v. Black Ops Brewing, Inc., 2016 WL 80632,*10 (E.D. Cal. Jan. 7, 2016) (infringement “will cause [p]lain-tiff to lose its ability to control its brand reputation andgoodwill, since what could be perceived by consumers asthe quality of [p]laintiff’s product risks no longer beingwithin [p]laintiff’s control”); IHOP Franchising, LLC v.Hameed, 2015 WL 429547, at *5 (E.D. Cal. Feb. 2, 2015)(“[A]llowing a deficient operator to operate underPlaintiff’s Marks — despite termination — irreparablyharms IHOP by removing its ability to control its reputa-tion.”); United Tactical Sys., LLC v. Real Action Paintball,Inc., 2014 WL 6788310, at *23 (N.D. Cal. Dec. 2, 2014);Starbucks Corp. v. Heller, 2014 WL 6685662, at *4 (C.D.Cal. Nov. 26, 2014). Notwithstanding, it seems that equat-ing loss of control with irreparable harm is somewhat cir-cular. Isn’t there always a loss of control in a trademarkinfringement case? And, if so, wouldn’t a finding ofirreparable harm be all but a foregone conclusion and atleast somewhat inconsistent with eBay?

Nonetheless, it appears to be universally accepted afterpost-Herb Reed that non-quantifiable damage to goodwillor loss of control of reputation may be evidence ofirreparable harm. However, there is no similar consensusabout what constitutes compelling evidence of suchharm. The uncertainty generally stems from the NinthCircuit’s admonitions that “unsupported and conclusorystatements” and “pronouncements grounded in platitudes”will not suffice. Herb Reed, 739 F.3d at 1250. So, what willsuffice? It ultimately depends on the facts and the avail-able evidence, but a few general guidelines can be teasedout of recent district court decisions.

As a starting point, a moving party should explain itsbusiness and the importance of the infringed trademark toits success. The moving party should offer similarly funda-mental and concrete evidence that the mark is well

Continued on page 8


right. Many of my colleagues report settlements of low-end NPE cases in the low-to-mid five figure range.

In contrast, if the defendant sees that the plaintiff’s coun-sel has litigated over 40 patent cases, participated in over20 claim construction hearings, and taken 10 cases to trial(often successfully), the decision makers for the defendantwill expect a significant fight over substantial damages.This belief will be enhanced if the data shows that theplaintiff’s counsel has successfully taken many patentsthrough IPR and trial. In such instances, the defendant willfocus on hiring a “top” defense firm and know that it needsto demonstrate (1) the case lacks technical and/or finan-cial merit and (2) it will not be “intimidated” by the plain-tiff. Often, simultaneously, the defendant will begin theprocess of educating management about the case’s risks.Executives do not want to sit through a technical tutorial,and tend to focus on the “metadata” andexpected litigation costs to determinethe strategic options for resolving thecase from the profit-and-loss perspec-tive. As the patent case goes on, the lia-bility and damages risks will play a larg-er role in management discussionsabout the case.

The primary lesson from the “fishbowl”? It is critical that compa-

nies become data aware and use thisawareness to their advantage in patentlitigation and negotiations. For patentholders and defendants, it is important for them to knowthat their behavior in patent litigation will shape howfuture parties view them in litigation. If you quickly settlea case, subsequent opponents may infer that you are will-ing to enter into “cheap” settlements and/or wish to avoidlitigation. It is also important to know the data surround-ing your counsel. If you want to send a message that youexpect a large royalty and/or are a fighter who will notbow to pressure, do not select a counsel (1) who hasnever gone to trial and/or (2) has a record of settling casesquickly. The inconsistency between your rhetoric and thehistory of your attorney could be fatal to your goals inpatent litigation. And finally, know the statistics regardingyour judge and/or court. How long will it likely take to goto trial? Does the judge have a history of granting transfermotions, motions to stay and/or motions for summaryjudgment? It is important that your characterizationsabout a case do not conflict with the history of the courtand/or judge. If it does, you will lose credibility andmomentum.

James Yoon

On PATENTS

James Yoon

Litigation is a key component of anyeffective patent licensing program. Without a crediblethreat of patent litigation presenting a clear risk of largepotential damages and/or an injunction, it is very difficultfor patent holders to convince companies to pay a signifi-cant royalty or licensing fee.

Previously, the required showing of risk was usuallybased on a detailed analysis of the operation and sales ofthe accused products, the meaning of the patent claims,and the prior art. Often, patent holders and (potential)defendants had detailed meetings discussing the liabilityand damage theories. While these discussions rarely result-ed in agreement on the merits, they (along with court rul-ings such as a claim construction order) often resulted in aconsensus on the range of likely potential outcomes thatenabled the business people on both sides of the patentdispute to reach a compromise. Sometimes such settle-ments were prompt; sometimes they came only after pro-tracted litigation and the active assistance of a neutral.Either way, the discussions focused on the legal merits ofthe specific dispute between the parties. This is no longerthe case.

Today, we live in a digital “fish bowl” where the metadatasurrounding the players involved in a patent dispute andindustry statistics are the key driving factors in the “pric-ing” of patent settlements. That metadata — not the indi-vidual merits of the patent claim(s) — shapes the under-standing of the negotiating parties. Today, when a compa-ny is sued for patent infringement, a defendant no longerputs together a technical team of patent attorneys andengineers to analyze the patent. Defendants know thatsuch teams are expensive and slow, diverting importantresources away from the business. Instead, the companydecision makers want to see the metadata regarding litiga-tion counsel and the holding company as well as judicialstatistics. This data — not the patent — determines howthe defendant views the case. If the plaintiff’s counsel has(1) litigated over 40 patent cases but has never taken oneeven to claim construction, (2) never had a case where thepatent has gone through a patent office inter partes review(“IPR”), and (3) typically settled in less than 150 days, thedecision makers for the defendant will believe that theplaintiff is looking for a quick settlement for a fraction ofthe cost for the filing of an IPR (e.g., $100-$300K).Experience has generally proven these patent defendants

7o

James Yoon is a partner with the Palo Alto office ofWilson Sonsini Goodrich & Rosati. [email protected]


8

whether the infringement resulted in a spike in the num-ber or type of customer complaints. In many instances,this type of evidence may be most tangible proof of theharm caused by the infringement.

Lost Sales and Customers

Courts routinely consider evidence of lost sales or cus-tomers as evidence of irreparable harm. Stuhlbarg Int’lSales Co. v. John D. Brush and Co., Inc., 240 F.3d 832, 841(9th Cir. 2001) (“Evidence of threatened loss of prospec-tive customers…certainly supports a finding of the possi-bility of irreparable harm.”); Starbucks, 2014 WL 6685662,at *4 (Starbucks deprived of potential accounts); Am.Bullion, Inc. v. Regal Assets, LLC, 2014 WL 6453783, at *5(C.D. Cal. Nov. 17, 2014) (evidence of lost sales based onconsumer testimony that they chose to do business withcompetitor). However, some district courts have foundthat this type of harm may be adequately remedied by anaward of damages. Arcsoft, Inc. v. Cyberlink Corp., —F. Supp. 3d —, 2015 WL 9455516, at *12 (plaintiff failed toexplain why decreased downloads, users and advertisingsales are not “economic injuries that can be remedied bymonetary damages”); Wells Fargo & Co. v. ABD Ins. & Fin.Servs. Inc., 2014 WL 4312021, at *12 (N.D. Cal. Aug. 28,2014) (“[E]ven if Wells Fargo could show that it had lost(or was likely to lose) business as a result of defendants’use of the “ABD” name, it is likely that such harm could beremedied through monetary damages — as opposed toharm to reputation or goodwill, which is less easily quanti-fied.”). Notwithstanding this divergence of opinion, evi-dence of lost sales or customers should be submitted tothe extent it exists.

Counterfeit and Inferior Products or Services

Courts typically have little hesitation in finding irrepara-ble harm when the trademark infringement involves coun-terfeit or demonstrably inferior products or services. See,e.g., SATA GmbH & Co. Kg v. Wenzhou New Century Int’l,Ltd., 2015 WL 6680807, at *8 (C.D. Cal. Oct. 19, 2015)(defective counterfeit spray paint reservoirs); Anhing,2015 WL 451846, at *23 (inferior rice products); UnitedTactical, 2014 WL 6788310, at *23 (subpar PepperBall pro-jectiles ). Evidence that the product or services are subparmay come from customer complaints.

Survey Evidence

Survey results are frequently utilized in Lanham Actcases and may be compelling evidence of confusion andharm. It is critical that the survey methodology be sound,with a solid causal nexus between the survey results andthe claimed confusion or harm. Wells Fargo, 2014WL 4312021, at *23 (deficiencies in survey re confusion“bear on the weight given to the survey”); see also PomWonderful, 2015 WL 10433693, at *16, n. 92 (if survey “evi-dence had been adduced, it is likely the court would havefound that Pom Wonderful had satisfied its burden” ofdemonstrating irreparable harm).


known and positively perceived by the consuming public,as well as evidence of the steps it has taken to developand protect its trademark(s) and goodwill, including sumsspent on marketing, brand management, and priorenforcement efforts. Unsupported assertions that theinfringement “diminishes,” “undermines,” “taints,” or “tar-nishes” the goodwill/reputation of the moving party or theinfringed mark should be avoided; instead, such argumentsshould be linked to actual evidence that the underlyingproduct/services are counterfeit or inferior, or of customerconfusion or lost sales/lost customers.

Customer Confusion and Complaints

While the majority of circuit courts seem to agree thatevidence of consumer confusion or complaints will, as amatter of course, constitute irreparable harm, the NinthCircuit expressed a different opinion in Herb Reed, hold-ing that customer confusion does not constitute irrepara-ble harm and to find otherwise “collapses the likelihood ofsuccess and the irreparable harm factors.” 736 F.3d at1251. Some district courts have interpreted Herb Reed asessentially setting forth a blanket prohibition on consumerconfusion evidence being considered in determiningwhether there is irreparable harm. See, e.g., ZeltiqAesthetics, Inc. v. Sun Sereneity SPA, 2105 WL 9242154, at*5 (E.D. Cal. Dec. 17, 2015) (“[E]vidence of customer con-fusion is not evidence of irreparable harm.”); Williams v.Green Valley RV, Inc., 2015 WL 4694075, at *2 (C.D. Cal.Aug. 6 2015) (“Plaintiff’s evidence…is nothing more thana regurgitation of consumer confusion evidence, which isthe exact type of evidence explicitly rejected by the NinthCircuit in Herb Reed.”).

However, more recent Ninth Circuit cases suggests thatevidence of actual customer confusion may be relevant atleast inso far as it demonstrates damage to goodwill or lossof control of reputation. San Miguel Pure Foods Co.,Inc. v. Ramar Int’l Corp., 625 F.App’x 322, 327 (9th Cir.2015); Life Alert Emergency Response, Inc. v. LifeWatch,Inc., 601 F.App’x 469, 473-74 (9th Cir. 2015). Several dis-trict courts have followed this approach. See, e.g., PomWonderful LLC v. Hubbard, 2015 WL 10433693, at *12(C.D. Cal. Aug. 6, 2015) ( “[O]ne way to show a likelihoodof irreparable harm is to show that there has, to date, beensome actual confusion or harm”; emphasis in original);Anhing Corp. v. Thuan Phong Corp. Ltd., 2015WL 451846, at *23 (C.D. Cal. Jul. 24, 2015); IHOP, 2015WL 429547, at *5; United Tactical, 2014 WL 6788310, at*23; Kreation Juicery, Inc. v. Shekarchi, 2014 WL 7564679,at *12 (C.D. Cal. Sept. 17, 2014). And some courts havefound that the absence of confusion is evidence of noirreparable harm. See, e.g., Cutting Edge Solutions, 2014WL 5361548, at *5.

While evidence of customer confusion/complaints isperhaps not as probative as it once was, and some courtshave flatly rejected it, a moving party should still presentany such evidence that exists, as well as explain in whichthe context customer communications were made and Continued on page 10


Circuit also held that evidence that the defendants soughtinsurance exclusives — which the Court characterized asa form of “boycott” — meant that summary judgment wasinappropriate.

In dissent, Judge Griffin wrote that

As the majority states, American Needle “eschewed for-malistic distinctions in favor of a functional considerationof how the parties involved in the alleged anticompetitiveconduct actually operate.” Am. Needle, 560 U.S. at 191.Guided by the rule of reason, my colleagues interpret thisdirective to mean that we should ask how defendants“actually operate” with regard to plaintiff — specifically,their intent to keep plaintiff out of the market as ex -pressed through apparent threats by Premier’s [the JOAentity] executives and the boycott defendants allegedlyarranged among the insurance companies. This view isflawed. Defendants’ intent to exclude others from themarket is irrelevant to determining whether defendantsthemselves constitute a single entity. To resolve that ques-tion, we should consider how defendants“actually operate” amongst each other.

Id. at 20. Due to the allocation of profitsand losses, no single hospital had anyincentive to become more profitable byattracting more patients than the other.“The majority is therefore incorrect tosay ‘defendant hospitals compete witheach other…for patients.’ They do not.”Id. at 22 (Griffin, J., dissenting). JudgeGriffin then analyzed the various pow-ers granted under the JOA and deter-mined that they evinced more than ade-quate integration to defeat any conspir-acy claim.

Putting aside whether the dissentwas right that this particular hospital network had ade-quate integration, the Sixth Circuit’s decision is troubling.The majority opinion focuses on intent (which may berelevant once one gets to a Rule of Reason analysis ofrestraints) to analyze the preliminary question of whetherjoint venture defendants’ structure even allows for aSherman Act Section 1 claim. And so, on little more thanone or two slips of possibly self-serving evidence or testi-mony, plaintiffs may get to go to trial against joint ven-tures that are appropriately and conservatively structured.

Needless to say, this makes designing and advisingjoint ventures considerably more difficult. Prior to

Atrium Health, JV counsel could comfortably focus onthe structure and functions of the JV as well as questionsrelating to whether it would have or facilitate the exerciseof market power. Now, it is not clear whether these struc-tural issues are dispositive (at least in the Sixth Circuit), orwhat the right touchstone for analysis should be. For allthese reasons, the Sixth Circuit should have followedJudge Griffin’s dissent and disposed of the claims onstructural grounds.

Howard Ullman

Howard Ullman

9

On ANTITRUSTSixth Circuit Opens a Pandora’sBox of Joint Venture Challengers

It’s been 38 years since Jaws II de -buted with its tagline “just when you thought it was safeto go back in the water….” After some years of consensus-building on how to appropriately structure competitorjoint ventures (“JVs”), a recent opinion out of the SixthCircuit makes one wonder whether it is still safe to put atoe in the JV ocean.

Consider the problem from the perspective of the fol-lowing hypothetical. Say you’re a group of hospitals thatget together under a Joint Operating Agreement (“JOA”).You agree to form an integrated health system. You agreeto total your net incomes into a single “network netincome” that is allocated to the parties based on predeter-mined percentages. That means that no hospital has anincentive to poach patients from another. You also agreeto share losses according to the same predetermined per-centages.

And you go further — you grant significant operationalauthority over each hospital to a central operator. Thatoperator can, among other things, require coordination ofactivities. The operator has authority to manage all hospi-tal operations and is in charge of centralized managedcare and legal functions. The operator also has authorityand control over strategic plans, budgets, and businessplans, and controls hospitals’ debt incurrence and negoti-ates with insurance companies on behalf of the hospitals.The operator’s CEO has the power to remove each defen-dant hospital’s CEO.

All of these steps suggest that you’re an integrated jointventure and that the hospitals cannot conspire to violateSherman Act Section 1 (at least insofar as JOA activitiesgo). See Copperweld Corp. v. Independence Tube Corp.,467 U.S. 752 (1984), and American Needle, Inc. v.National Football League, 560 U.S. 183 (2010). In otherwords, one should analyze a competitor joint venturefrom a structural perspective – and ask questions such as:What have the competitors agreed to do? How economi-cally integrated is the JV? And who has the power to dowhat?

However, on March 22, 2016, the Sixth Circuit, in TheMedical Center at Elizabeth Place, LLC v. Atrium HealthSystem, No. 14-4166, wrote that all of the structural evi-dence in the hypothetical above is insufficient to supporta summary judgment in favor of the hospitals on conspira-cy claims brought by a competing hospital. Why? Becausethere was also evidence that the intent of the arrange-ment was (at least in part) to prevent plaintiff hospitalfrom entering the local healthcare market. The Sixth oHoward Ullman is of counsel with Orrick,

Herrington & Sutcliffe LLP. [email protected]


10



Marketing and Other Expert Testimony

While many, if not most, motions for injunctive reliefinclude testimony or declarations from “marketing” execu-tives or experts regarding the irreparable harm beingcaused by the alleged infringement, such evidence has metwith a mixed reception. Some courts have found such evi-dence to be persuasive, if not determinative, of irreparableharm. See, e.g., Starbucks, 2014 WL 6685662, at *4; E & JGallo Winery v. Grenade Beverage, LLC, 2014WL 4073241, at *1415 (E.D. Cal. Aug. 15, 2014). Othercourts have been more critical of this type of evidence andcarefully analyzed whether the assertions were impermis-sible legal conclusions, tethered to actual evidence, “unsup-ported and conclusory,” and otherwise generally admissi-ble. See, e.g., Pom Wonderful, 2015 WL 10433693, at*1118; Wells Fargo, 2014 WL 4312021, at *910, 912.

It is undisputable that Herb Reed materially changedthe landscape in Lanham Act cases. It appears equally

clear that motions for preliminary injunctions are beinggranted with less frequency than in the past. And whilethis is unlikely to change, all is not lost for a party seekinginjunctive relief. The evidence and carefully crafted argu-ments of irreparable harm will now make the difference.And perhaps this is the way it should be given that injunc-tions are supposed to be an extraordinary remedy.

oThe Honorable James Donato is a District Judge of

the United States District Court, Northern District ofCalifornia.

Get over your fears and get back into the courtroom. It’stime for you, business trial lawyers, to put the “T” backinto ABTL.

oGriff Towle is a Principal at Bartko Zankel Bunzel &

Miller who represents clients in complex commerciallitigation.

Los Angeles HostsAnnual Seminar in Maui

This year’s Annual Seminar — set forOctober 1-5 at the Ritz Carlton in Maui, Hawaii —is entitled The Technology Enigma — A 21stCentury Trial. Focused on the timely topics ofencryption technology and a possible data breach,the Annual Seminar will feature a mock trial inwhich participants and spectators alike learn howbest to prepare and present evidence involving atechnology dispute. Such issues will include pre-sentation of complicated data and code to a jury,multi-jurisdictional discovery disputes, and theintersection between public and private interestsin data security. The Seminar will also featureopportunities to interact in small groups withjudges and practitioners. More than 30 judgeshave already registered and we expect a recordturnout from the bench. Registration is open andspaces are filling fast — sign up soon!

Which cabana is yours?


cost of the expert through trial with your client early inthe case, and keep an eye on expert fees as they areincurred.

Expert Communications

Once the expert is retained, communicate with theexpert with an eye toward what communications you willneed to disclose to opposing counsel. The federal rulesprovide greater protection for expert communicationsthan the California state rules. If you are in California statecourt, consider proposing that the parties will follow thefederal expert discovery rules.

Expert Reports

The federal rules require experts to provide a writtenreport. Federal Rules of Civil Procedure (“FRCP”) 26(a)(2)(A)(B). In contrast, California rules do not require expertsto prepare written reports (though any discoverablereport prepared must be produced if requested). Itbecomes a strategic decision whetherto request the expert to pre pare areport. If the expert does not pre pare awritten re port, opposing coun sel maybe at a disadvantage at de position. If theexpert is preparing a de tailed analysis,however, a report may be necessary toensure accuracy at de posi tion, and a lessexperienced testifier may be more con-fident with a report in hand. Moreover, astrong expert report may be valuable insettlement discussions.

Depositions

Thorough preparation is key. Makesure the expert knows all aspects of any report he pre-pared, opinions he will give, and documents he has reliedon. Consider how the expert will present at deposition, asmany expert depositions are videotaped, and jurors maybe put off by an expert who comes across as arrogant orargumentative. In certain technical cases, having theexpert present during testimony of the opposing expert isan essential aid to cross-examination. Note that wherethere is a general order excluding witnesses in effect attrial, you should confirm that experts are exempt.

Trial

The expert should review his prior testimony and beprepared to present his opinions consistent with it. Heneeds to explain his opinions in a way the jury will under-stand. Expert testimony on complicated subjects such asdamages and patents may benefit from demonstrativeexhibits that explain the opinions (and keep the jurorsengaged).

Expert testimony can be critical. Finding the rightexpert early on and working closely with the expert

throughout the litigation can make the difference be -tween winning and losing a case.

Using Experts Effectivelyin Litigation

11

Besides clearly and persuasivelyexplaining complicated issues to a trier of fact, expertsassist clients and counsel to understand specialized areasat the beginning of the case, provide input on discovery,assist with cross-examination of the opposing expert, andfacilitate settlement.

Do You Need an Expert?

Certain subject areas, such as patent infringement andmedical malpractice, are so specialized that experts arenecessary. But what about a breach of contract claim? Itdepends. A simple breach of contract case may effectivelybe litigated without expert assistance. But complex con-tract claims could benefit from an expert who can speakto what terms are “industry standard” and how they areinterpreted.

When to Retain Experts

It can be helpful to consider experts at the beginning ofa case. Early expert review can highlight problems thatmay guide the client to consider settlement. Experts canalso assist counsel propounding and responding to discov-ery on specialized issues, frame questions for deposition,assist with mediations and settlement conferences, anddevelop themes that counsel can use.

How to Find Good Experts

Ask colleagues in and outside your firm for expert rec-ommendations. Clients may have helpful suggestionsabout individuals with expertise in their industry. Con -sulting companies can be a good source of experts in awide variety of subject areas at different price points.

Once potential experts are identified, request CVs andschedule interviews, providing relevant, non-confidentialmaterial to the expert. The interviews should cover ques-tions about background, relevant expertise, the expert’sprior cases (including the number of depositions, trial tes-timony (bench and jury), and expert reports provided),and whether the expert was ever disqualified. Ask theexpert if he has handled similar issues, and how he wouldapproach your case. Confirm his hourly rate, includingrates for any supporting personnel. Request and follow upwith references on how the expert performed in deposi-tion and trial, including any feedback from jurors, the quali-ty of any written report, and whether they would workwith the expert again. Check online jury reportingsources for prior expert testimony, and call the attorneyswho conducted cross-examination.

Expert fees can add up quickly, so discuss the potential

Caroline McIntyre

oCaroline McIntyre is Managing Partner with

Bergeson, LLP in San Jose, where she practicesbusiness litigation. [email protected]

Caroline McIntyre

On LITIGATION SKILLS


12

Today, more than forty years after itsfounding, ABTL is the largest bench/bar organization inCalifornia. With five chapters and more than 5,000 mem-bers statewide, ABTL reaches many business litigators andthe judiciary who preside over their cases. Our NorthernCalifornia chapter is the largest again this year, with over1,800 individuals and 43 firms as members. In reflectingon these statistics, and the responsibility that comes withthem, this year’s officers chose to focus on three areas tomake 2016 the best year yet.

First, ABTL’s officers developed and rolled out an onlinesurvey to solicit membership feedback. We wanted toknow what we are doing right, and what we can do bet-ter. In some respects, we confirmed what we thought:

members want “marquee names” asspeakers for our bi-monthly dinner pro-grams. Other preferences include hav-ing more judicial speakers, programsthat focus on litigation skills, and pro-grams with live demonstrations. Welearned that the greatest impediment tohaving more members attend theAnnual Seminar is the time commit-ment involved. We heard that the ABTLwebsite is not well used, but that mem-bers are in favor of posting video linksto past programming on the web formembers to view after the fact. A num-ber of members suggested that theevening programs be shorter. We wel-

come this feedback. As the year progresses, we intend toimplement some of the suggestions on a test basis and seehow the membership responds.

Second, we created a new Board Committee, entitledPro Bono/Community Outreach, to improve our efforts atgiving back to the broader community. Beatriz Mejia ofCooley LLP is our inaugural chair. In years past, ABTL hassponsored pro bono events. For example, we volunteeredwith Santa Clara County’s “peer court,” a voluntary pro-gram for minors to hear and recommend outcomes forother minors facing criminal charges. We sponsor the“One Warm Coat Drive” every year, where we collect anddistribute coats to the needy in San Francisco. But with acompelling need, and a large and enthusiastic member-ship, we concluded that we can do more. Stay tuned formore information about our community outreach and pro-grams/activities for ABTL members that we hope will havea larger positive impact on our community.

Third, we are committed to making ABTL relevant notonly for its current members, but also for the next genera-tion of business trial lawyers. Towards that end, we haveformed a sub-committee of Board and LDC members(lawyers 10 years or fewer out of law school) to considerthe question of how to improve ABTL’s appeal to youngerattorneys. We want to attract more junior lawyers to ourprograms. We want them as members. We want them tounderstand that the relationships created amongst our

c/o Michèle (Bowen) Silva, Executive Director115 Northwood Commons, Livermore, California 94551

(925) 447-7900 • www. abtl.org

OFFICERSDiane M. Doolittle, President

Thomas B. Mayhew, Vice PresidentLarry M. Cirelli, Treasurer

Daniel Bergeson, SecretaryAndrew A. Bassak, Immediate Past President

BOARD OF GOVERNORSDaniel B. Asimow • Hon. Carlos Bea William Bernstein • Rachel S. Brass

Hon. Steven A. Brick (Ret.) • Walter F. Brown, Jr.Hon. Gerald J. Buchwald • Jeffrey R. Chanin

Frank A. Cialone • Rodger R. ColeHon. Carol A. Corrigan • Bruce A. Ericson

Marcie Keenan Farano • Hon. Robert B. FreedmanHon. Beth L. Freeman • Hon. Haywood Gilliam

Jennifer Golinveaux • Hon. Yvonne Gonzalez RogersHon. Barry Goode • Hon. Susan Y. Illston

Hon. Teri L. Jackson • Hon. Curtis KarnowDavid Kiernan • Hon. Sallie Kim • Hon. Peter Kirwan

Hon. James P. Kleinberg (Ret.) • Hon. Lucy H. KohHon. Richard A. Kramer (Ret.) • Molly Moriarty Lane

Hon. Elizabeth D. Laporte • Judson E. LobdellHon. Patricia M. Lucas • Hon. Socrates P. Manoukian

Beatriz Mejia • Hon. Marla J. MillerMark C. Molumphy • Tim L. O’Mara • Michael K. Plimack

Benjamin K. Riley • Hon. Richard G. SeeborgJohn S. Siamas • Hon. Mark B. Simons

Hon. Winifred Smith • David S. Steuer • Peter M. StoneStephen H. Sutro • Ragesh K. Tangri • Hon.Alison M. Tucher

Christine Van Aken • Marshall C. WallaceChristopher Wanger • Hon. Mary Wiss

EDITORIAL BOARD — ABTL REPORT

Ragesh K. Tangri, Editor-in-Chief(415) 362-6666

ColumnistsAmy Briggs • Frank Cialone • Roger Heller

Joseph Mauch • Caroline McIntyre • Peggy OtumHoward Ullman • James Yoon

Letter from the President

Diane M. Doolittle

members help build community and help their careers.Indeed, ABTL is committed to nurturing business triallawyers of all vintages, despite the current membershipskew toward more seasoned lawyers. The sub-committeeis co-chaired by ABTL Board member the HonorableElizabeth LaPorte of the Northern District and ArthurRoberts, Chair of the LDC. As the sub-committee under-takes its work, we will report on its progress.

From my vantage point as a long-time Board memberand now president, I have enormous respect for this orga-nization. Our chapter is healthy and strong. As with mostthings in life, however, there is room for improvement. Ilook forward to implementing some of the changes notedabove to help fulfill our mission of improving the qualityof business trial lawyer advocacy, while encouraging civili-ty and collegiality amongst bench and bar.

oDiane M. Doolittle is a partner with Quinn Emanuel

Urquhart & Sullivan, LLP and the President of theNorthern California chapter of ABTL.


Vol. 24, No. 3, Spring 2016

Documents

Transcript of Vol. 24, No. 3, Spring 2016